Pages 156-169

NATIONAL JUDGES' PRESENTATIONS

DE Germany

DE Germany - Peter MEIER-BECK - Presiding judge at the Bundesgerichtshof (Federal Court of Justice) and honorary professor at Düsseldorf University - Patent judgments of the Bundesgerichtshof in 2008 and 2009

In 2008 and 2009, the German courts passed judgment in a large number of patent cases, which cannot all be reported in detail here. The Bundesgerichtshof (German Federal Court of Justice; "BGH") alone rules - as the court of final instance in both infringement and revocation proceedings - on almost 50 patent cases a year. This report is therefore limited to a small selection of BGH decisions which appear particularly relevant in the context of harmonisation of European patent-law practice.

1. Inventions

In an order made on a patent proprietor's appeal bearing the rather unwieldy headword "Steuerungseinrichtung für Untersuchungsmodalitäten",1 the BGH once again addressed the patentability of computer-implemented inventions. The Bundespatentgericht (Federal Patents Court) had taken the view that the filed "method for processing medically relevant data for patient examinations" did not involve a technical invention within the meaning of section 1 of the German Patent Law ("PatG") (the national provision corresponding to Article 52 EPC). The BGH overturned its ruling.

It first of all made clear that the subject-matter of the application could already be considered to have the technicity required for patentability of a computer-implemented invention because it served the processing, storage and transmission of data by a technical device. It was irrelevant for the purposes of the technicity requirement whether the subject-matter of an application comprised non-technical features in addition to its technical ones. According to the BGH, the case law based on the "core doctrine"2 and delineating non-patentable combinations had already been abandoned in the Tauchcomputer judgment.3 Whether or not a combination of technical and non-technical or non-patentable features was patentable in an individual case therefore depended - unless one of the exceptions in section 1(3) PatG (Article 52(2) EPC) applied - solely on whether it involved a technical step. The BGH thereby transposed the principle already established in the Sprachanalyseeinrichtung judgment4 that a claimed technical device (such as a computer) always embodies a technical teaching to method claims teaching the use of such a device, and so ruled out the possibility that a computer-implemented teaching might be deemed non-technical.

According to the BGH Patent Division's case law, a computer-implemented invention can, if at all, only fail to be classed as an "invention" if it is not the solution to a specific technical problem by technical means.5 However, even this – low – hurdle could be taken by the teaching in question,6 so that, even from this point of view, inventive step remained the factor decisive for patentability. In so finding, the BGH indicated (once again7) that the need for a specific technical problem also means that account must be taken of the solution to this problem when assessing novelty and inventive step. As a rule, instructions not forming part of the technology are insufficient in this regard and are relevant only in so far as they influence the solution to the technical problem by technical means. Rather, a computer-implemented invention only becomes patentable if the solution to the technical problem is new and inventive.8 This guarantees that it will continue to be the case that, ultimately, only technical innovations, but not clever business ideas or creative economic concepts, are patentable.

2. Novelty

In its Betonstraßenfertiger judgment of 30 January 2008,9 the BGH had to assess the disclosure in a priority application. It depended on how its content was to be understood whether priority had been rightly claimed and so whether or not the exhibition of a machine according to the invention at a trade fair prior to filing of the patent application had prejudiced the novelty of the invention's subject-matter.

When filing an application for a European patent, applicants may claim a priority right deriving from an earlier application if both applications concern the same invention (Article 87(1) EPC). Betonstraßenfertiger confirms the earlier case law10 establishing that this requirement is met if the combination of features claimed in the subsequent patent application is disclosed in its entirety in the previous application as forming part of the claimed invention.11 As in Luftverteiler, the BGH adopted the position taken by the boards of appeal of the European Patent Office (EPO) that this is the case if it is possible to derive the subject-matter of the claim "directly and unambiguously" from the previous application as a whole. Accordingly, the assessment of identical disclosure is subject to the principles applicable to the examination of novelty.12 However, it does not follow from this narrow definition of the term "same invention" that the inventions cease to be identical wherever there is an outward inconsistency between the text or drawings in the earlier application and those in the subsequent application. If the two differ only because shortcomings in the language or drawings of the priority application have been rectified in the later patent specification, but without any change to, or extension of, the inventive subject-matter, then the requirement of a direct and unambiguous match is still met.13

The Olanzapin judgment of 16 December 200814 attracted considerable attention from specialists. Once again, the line of argument turned on the notion of disclosure. The question to be answered when examining whether a prior publication destroys novelty is, the BGH held, what technical information is disclosed to the skilled person, the definition of disclosure being no different from that otherwise applied in patent law.15 The object of the examination is therefore not to determine how the skilled person, using for example his specialist knowledge, might implement or modify a given general teaching, but only what he would gather from the prior publication as that (general) teaching. Once again, the BGH, expressly citing decisions of the EPO boards of appeal, linked its ruling to the settled case law that the decisive question is what the skilled person can gather "directly and unambiguously" from a publication.16

The BGH does not see this as contradicting its previous case law that, having regard especially to the aim of avoiding double patenting which underlies the (separate) examination of novelty, it is essential to extend the scope of disclosure prejudicial to novelty beyond the "plain wording".17 It observed that the idea behind including matter not expressly mentioned in the claimed features or in the wording of the description, but which the skilled person, in the light of the common general knowledge in the art, would take for granted or consider essential as part of implementing the teaching protected, and which therefore need not be specifically disclosed, is not to supplement disclosure with specialist knowledge, but rather, just as for interpreting the wording of a patent claim, to help ascertain the essential meaning, i.e. the technical information gathered from the source in question by readers skilled in the art in the light of their specialist knowledge.18

According to Olanzapin, the same goes for variants which, as in Elektrische Steckverbindung, are likewise included in the disclosed matter as so obvious to the skilled person in view of the overall context that they would automatically come to mind on a careful reading focusing less on the actual words than on their clear meaning, so that he would mentally "take them as read", even if he is unaware of doing so.19 The word "obvious" might, the BGH observed, at first sight be thought to relate to equivalence, but in its opinion, the term "take as read" makes clear that this is not about including replacement means but understanding in its entirety the technical information gathered by the skilled person from a document. The disclosed content does not comprise either variations and developments of this information or the conclusions which a skilled person, based on his specialist knowledge, might draw from it.20

The BGH's Patent Division then applied these principles to the field of chemical substances, in particular the assessment of the information contained in a structural formula. Just as the fact that the specific embodiment of a device falls within the scope of a generally worded device claim is irrelevant for the purposes of establishing disclosure of this embodiment, the fact that a chemical compound falls within the scope of a pre-published formula does not mean that this specific compound has also been disclosed.21 Rather, the decisive question is whether the specific compound itself is disclosed. For that, information is required which would enable the skilled person without further ado to carry out the invention concerning precisely this compound, i.e. to obtain the substance in question.22 In Olanzapin, the BGH established that - as, once again, also goes for device patents - the skilled person's ability, using known methods and his other specialist knowledge, to obtain a certain number of individual compounds falling within the scope of a disclosed structural formula cannot be treated as equivalent to disclosure of those compounds.23 Rather, in most cases at least, the individual compounds are merely applications of the technical information made available to the skilled person by disclosure of the structural or any other general formula. Thus, the compounds falling within the scope of such a formula are not, themselves, disclosed by specification of that formula; normally, additional information, in particular such as serves to individualise the compounds, is required for them to be regarded as having been made available to the skilled person as defined for the purposes of examining novelty. An individual compound which is not expressly specified can only be regarded as disclosed if the skilled person would "take it as read" in the sense outlined above, for example because he is familiar with it as the specified general formula's usual reduction in practice and so cannot help but immediately think of it as at least also covered on reading the general formula. This approach is intended to achieve a greater degree of harmonisation with the case law of the EPO technical boards of appeal, according to which the only technical teachings prejudicial to novelty are those which disclose a substance either as the inevitable result of a previously described method or in specific, i.e. individualised, form.24

The BGH also addressed the novelty of a chemical compound in another judgment of 10 September 2009, in which it applied the Olanzapin principles to the classic case of a known and described racemat and its non-described enantiomers.25

3. Inventive step

Another issue touched on in Olanzapin is that the "the closest prior art" can only be determined ex post facto, i.e. once the invention is known, and may not be used indiscriminately as a "springboard" to the invention. The BGH took the view that the skilled person's decision to pursue the approach set out in the published document regarded by the Federal Patent Court as prejudicial to novelty was an initial step to be taken into account in assessing whether the invention was obvious. Such an initial selection cannot, it found, be disregarded on the basis that the examination of inventive step must always be based on the closest prior art. This art has no such overriding character. Only with hindsight does it become clear which publication is closest to the invention and where the developer could have started the process leading to the solution according to the invention. The choice of starting point must therefore be justified, the basis for this generally being the skilled person's efforts to find a better solution to a particular problem than that existing in the prior art.26

By far the majority of judgments in revocation proceedings are concerned with the inventive step required for patentability. They frequently make clear that, although inventive step is a statutory requirement for patentability, it is not the subject of examination. The question examined is whether or not the subject-matter of the invention was obvious to the skilled person on the priority date, having regard to the prior art (Article 56, sentence 1, EPC; section 4, sentence 1, PatG). It is not inventive step, but rather the absence of such a step, i.e. the obviousness of the invention, which must be examined. If there is no evidence that the invention is obvious, it "shall be considered", so the law's wording, to involve an inventive step. Thus, to some extent, the law accepts that patents may be granted even for innovations not involving an inventive step beyond the ability of the average skilled person, since, given the means of inquiry available to courts, they often cannot make an affirmative finding in retrospect – and, like examiners, revocation judges must always take a retrospective view - that such a level of inventiveness was reached. It must therefore be deemed sufficient that there is nothing in the prior art or the common general knowledge in the relevant field which would suffice to conclude that the subject-matter of the invention was obvious to the skilled person.

The emphasis on the need for an incentive or cause inducing the inventor to solve a problem (by means of the invention) should not be misunderstood to mean that, according to the BGH's more recent case law, a lack of inventive step can only be established if a document explicitly informs the skilled person how to arrive at the invention. Nevertheless, there is a cause for concern if this notion of incentive is reduced to the "skilled person's constant pursuit of improvements". This is nothing but an empty phrase and cannot serve as a substitute for specific reasons for a finding that the invention is obvious. Nor can a mere lack of obstacles preventing a certain course of action serve as a substitute for an incentive.27

Justification is also required for any assumption that the skilled person primarily "responsible" sought the assistance of other specialists.28 Even recourse to knowledge forming part of the common general knowledge in the art may require justification.29 Generally speaking at least, an attempt to prove that a specific technical solution forms part of the common general knowledge cannot serve as a substitute for an incentive inducing the inventor to apply that solution in a technical context in which it has not yet been used.

This is because, as observed in Betrieb einer Sicherheitseinrichtung,30 experience shows that technical developments do not necessarily take the course which, on a retrospective analysis of the original circumstances, might appear objectively plausible or even more or less inevitable. Therefore - unless it was self-evident for the skilled person what had to be done - for the adoption of an approach differing from those already taken to solving the problem to be regarded not only as possible but also as obvious to the skilled person, it must, as a general rule, be shown that there was an additional impetus, incentive or clue or some other reason beyond mere recognition of the technical problem for attempting to solve that problem by way of the invention.31

Factual circumstances indicating how the invention must be seen in the context of developments in the specialist field and how it was received by competitors and consumers of the product concerned generally cease to have material relevance for such an examination of inventive step. The BGH has ruled that only in isolated cases can such auxiliary factors ("indicative evidence") be treated as a ground for a particularly critical review of known solutions with a view to ascertaining whether, in the light of the common general knowledge in the art, they provide adequate evidence that the invention was obvious and do not simply appear with hindsight to act as an incentive leading to the invention.32

4. Interpretation of patent claims

The Mehrgangnabe judgment33 was given in an infringement case concerning three highly complex patents inscrutable to a judge lacking technical training. This was undoubtedly one of the reasons why the appeal court relied entirely on the appointed expert's interpretation of the claims. As was to be expected in the light of previous judgments on the same matter,34 the BGH did not endorse this approach.

It reiterated that, in assessing whether a patent has been infringed, the court must first identify the technical teaching which the relevant skilled person would derive from the claimed features, both in isolation and as a whole.35 What emerges from this examination as the protected subject-matter is a legal question, which explains why interpretation of the claim is not only fully reviewable by the BGH36 but also a matter for the court alone, and not for its appointed expert.37. That the skilled person's understanding of the terms used in the claim and of the claim's overall context serve as the basis for interpretation simply means that, if necessary, the court must consult an expert when it is required to establish objective technical facts and identify the knowledge, skills, experience and methods of the relevant skilled person which determine, or at least influence, his understanding of the patent claim and the terms used in the patent specification.38

It follows that the correct interpretation of the patent claim, as clarified on this basis, cannot be "established" by an investigation of the facts, but is the outcome of judicial construction in the light of the technical facts ascertained by the court, where necessary after consulting an expert.39 The expert's main task - in infringement cases just as in any other civil proceedings - is to provide the court with the specialist knowledge it needs to assess the facts.40 Experts may, in addition, be entrusted with the task of establishing the initial facts on which their opinion is to be based, if even this requires special expertise which the judge lacks. However, it is no more part of an appointed expert's remit in patent infringement proceedings to interpret the patent in question than it is to settle any other legal matter. Rather, the remit is to provide the court, where the parties' submissions are insufficient, with the specialist knowledge it requires to understand the technical teaching for which protection is sought and to interpret the patent claim defining this teaching – as the basis for establishing the scope of protection and so for examining infringement – in the light of its entire essential meaning.41

That is why courts are not free simply to adopt the conclusions drawn by an expert as to the content of the patent in suit's technical teaching in the light of his specialist knowledge. Moreover, experience shows that experts often tend to focus more on the embodiments of the invention - which, from their specialist perspective, are usually more meaningful - than on the more abstract wording of the patent claim. Thus, in the earlier Kabeldurchführung II judgment, the BGH's 10th Civil Chamber held that a trial judge must always conduct his own independent analysis to ascertain whether and to what extent an expert's testimony provides information which can be used to clarify material issues which can only be settled by the court hearing the case.42

Accordingly, in Mehrgangnabe, the BGH observed that the appeal court had not been released from its duty to conduct such an analysis in so far as the expert's testimony was consistent with the embodiments set out and explained in the patent descriptions, since such a limitation on its interpretation would have been incompatible with the principle that a patent claim characterising the patent in general manner may not be narrowly interpreted on the basis of an embodiment.43 Whilst the study of the description and drawings always needed for the purposes of interpretation may lead to a narrower understanding of the patent claim than the wording, considered in isolation, might suggest,44 this, the BGH found, must always be carefully examined in detail and, in particular, cannot be inferred from the fact that the description and pictures relate to only some of the embodiments potentially covered by the wording of the patent claim. Instead, the crucial question is whether it follows from the interpretation based on this study of the description and drawings that the technical effect which, according to the invention, is intended to be achieved by the means specified in the claim can only be achieved if such a narrow technical teaching is followed. In this connection, account may have to be taken of objective technical circumstances which, although not mentioned in the patent specification, form part of the skilled person's knowledge and may therefore influence his understanding of the patent claim, for example because, from his point of view, only one particular embodiment is suitable to achieve the effect intended by the invention or, conversely, a particular embodiment can be considered unsuitable from the outset.45